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Ivan Pomidoroff: Stolen (TM) trademark

The business structure trying to gain control of the domain UA is at the same time stealing others’ intellectual property.

Those in control of the domain UA, the limited liability company “Hostmaster”, which has for a long time and thus far successfully deflected attempts by state structures, as well as those close to the Security Service of Ukraine (SSU) to gain control over the domain, at a certain moment discovered to their surprise that the business UkrMITs [Ukrainian Network Information Centres] (onto which the gentlemen from these structures want to extend the right to run the domain) on its official correspondence forms uses the abbreviation UANIC as its English name.

Thus, for example, the abbreviation UANIC as its English name is used by UkrSITs when corresponding with ICANN [Internet Corporation for Assigned Names and Numbers] which oversees the distribution of space of names and addresses in the Internet. All would be fine were it not for one iron fast fact – UANIC was registered back in 2003, and has been used since 2002 as a trademark actually belonging to “Hostmaster”.

To give some more detail about the “background” of UkrMITs, it is worth remembering that members of the Council of UkrMITs include (SSU general) A. Herasimov, businessmen K. Sinyavsky, Y. Korzh, V. Polishchuk, as well as the business’ director, Y. Honcharuk.

It is also known that UkrSITs is a commercial structure whose founders include two daughter companies which are headed by (retired) generals of the security service.

We would also remind the reader that the above-mentioned team has, since 2000, been intensively working on trying to take over the management of the domain UA for their firm – the security service – business enterprise UkrMITs. Its energetic activities include creating a lobby at the very highest government level, creating “tamed” associations which supposedly represent the interests of “the entire Ukrainian Internet community” and writing letters, complaints and denunciations to ICANN on behalf of the management of these organizations, etc.

Therefore, having discovered that UkrMITs was stealing its registered name, on 29 November 2005, “Hostmaster” filed a suit in the Economic Court in Kyiv against the United Enterprise “Ukrainian Network Information Centres” (UkrMITS) calling for the charter documentation of UkrMITs where in its commercial name it uses the acronym “UANIC” to be declared invalid, and for a ban on their using the acronym “UANIC” in their activities.

One might think that the court’s ruling should be swift and unambiguous, and should accept “Hostmaster’s” claim. However, it was only yesterday, 22 May 2006, after many problems, obstacles and unmotivated postponements of court hearings, after 5 months review of the case, that the court finally announced that a ruling would be forthcoming, but only on 8 June 2006. We assume that the opinions of members of the panel of judges may have been divided, and that there is possibly a “principled minority” which does not want to issue a ruling in favour of UkrMITs which it knows to be unlawful, and that it is specifically for this reason that the announcement of the ruling is being dragged out.

Why the ruling could go against “Hostmaster” is easy to understand if one looks at the list of founders of “UkrSITs”.

Here I will cite some rather tedious legal subtleties which are needed in order to better understand the essence of this matter, and in order to draw certain parallels. This will make it possible to see how dangerous a precedent there could be if one of the institutions is, via the courts, allowed to use with impunity the registered trademark of another person as their official name.

Therefore the demands of “Hostmaster” are based on the fact that the Association is the owner of the Certificate for a trademark for goods and services from “UANIC” from 15.12.2003, and protection of the mark is retrospective to when the application was handed in, i.e. 4.04.2003.

Furthermore, the acronym “UANIC” is an original name of an independent part of a work: this is specifically a base or service for the “UANIC”: “UANIC” is an independent part of a program complex WHOIS-SERVICE», which needs to be used when allocating a domain.

The authors registered this program complex at the end of 2001, and at the beginning of 2002 all rights to it were passed to “Hostmaster”. Considering that the legal protection for a work applies not from the moment of its registration, but from when it was created, it is specifically the fact of the creation of a work and its being made public, the base / service “UANIC” was known and used according to intended purpose by third parties already in October 2000.

Since that time already nobody has the right to use the acronym “UANIC” without the permission of the author, formalized in the appropriate way and in accordance with legislation.

Despite the fact that “Hostmaster” owns the trade and service mark “UANIC”, UkrMITs is illegally using the acronym “UANIC” in its activities, with it placed on its business forms, on its Internet website, in communication with third parties and particularly with partners of the Society.

It is clear that such illegal actions on the part of UkrMITs do not only violate intellectual property rights to trademarks for goods and services, to an original name of an independent part of a work, but are also an act of unfair competition. However what we have here is also an act of dishonest competition since it leads to the mixing of the activity of two economic participants which is confirmed by the use at the level of ordinary users, as well as by the accusations from the Society’s foreign partners, in particular ICANN / IANA.

Among other reasons, UkrMITs provides the following arguments to justify their illegal actions.

* “non-commercial use by them of the acronym “UANIC” – so does that mean that any non-commercial, civic or loss-making office can without any bother freely take another (“well-promoted”) trademark and use it at their own discretion, including even in such types of activities for which the mark was registered by another organization? Furthermore UkrMITs has still not proven that their use of the acronym “UANIC” is non-commercial.
* “The use of a company name, prior use contradicts the claim of UkrMITs about non-commercial use.
* “Prior use by its founders which is transferred to UkrMITs, however this right of prior use and its transfer are somewhat transparent given that UkrMITs provides its own internal documents as proof: minutes from the founders’ meetings on the creation of UkrMITs, inter-departmental councils, etc. Whereas according to legislation, such rights can only be transferred on the basis of a licensed agreement in writing, with all compulsory significant conditions set down.

Thus, what we already see now as the result of UkrMITs actions, are as follows:

* The public, users of services and of goods, as well as “Hostmaster’s” business partners have been misled;
* the activities of an commercial party providing services under the trademark UANIC have become mixed with the limited liability company “Hostmaster”;
* “Hostmaster” has been discredited or risked such loss of reputation through the impossibility of controlling the activities of an illegal user (UkrMITs).

What we will have if the court rules in favour of UkrMITs

UkrMITs, as stated above, has given as “proof” its own internal documentation, with dates from before 2003, where the acronym “UANIC” can be seen. In the event that the court decides in favour of such proof (which can, incidentally, be “manufactured” retrospectively), then the main justification for the illegal use by UkrMITs of the trademark “UANIC” will be the admissibility, confirmed by court ruling, of internal documentation of a violator of intellectual property rights. This documentation can be created at any time (with the main point being that the date given is earlier that that on the application from the true owner of the trademark). If the DISHONEST acronym is recorded, then one of these protocols or meetings can be placed on a par with the agreement on the transfer of previous use.

And then – beware! All those wanting it have been given a carte blanche!

This is because a precedent will have been created which will make it possible for anyone to register any commercial party (association of businesses, individuals, charitable funds, etc, which are non-profit-making) with an acronym which is an exact reproduction of another known and well-advertised TM, thus enjoying the fame and reputation of this TM.

For example, why not register yourself a charitable non-commercial organization “Soft drinks Coca Cola” with the English abbreviation “Coca Cola” – somewhere I had some minutes lying about from the meetings of this organization which were (allegedly) held in the middle of the 1990s. We held them, didn’t we?

Thus, anyone can in such fashion “jump onto” the bandwagon of a well-promoted brand and use it to maximum extent in it “non-commercial” activities. Or no, sorry – far from anybody – only those whose founders include generals from the SSU.

However the problem is that in this case involving “Hostmaster” the situation is somewhat different from that involving a hypothetical “Coca Cola”. The point is that “Coca Cola” or other similar brands, if they suffer losses from the efforts of plagiarizers, they won’t be catastrophic, and in addition, any attempts to “milk” a brand are punished without any mercy by such giants.

As far as “Hostmaster” is concerned, its activities in servicing the UA domain depend on another, international, organization – ICANN/IANA, which has the jurisdiction specifically to resolve the issue of re-delegation of authority with regard to the UA domain, since a first level domain – the domains of specific countries – can only be serviced by one organization – a “natural monopolist”.

Therefore, UkrMITs is acting with brutal simplicity – they have seized someone else’s trade mark and are writing under this stolen trademark clauses in their organization on which the business of the robbed organization depends. Doing so, they try to wangle it with “we (the enemies) are so good, and they (the victims of our theft) – so bad, so please take their UA domain away from them and give it to us! After all we have the state (kind of) behind us, as represented by some (corrupt) officials, and (biased) courts which don’t give a monkey’s about laws and are governed purely by the interests of the security service!”.

P.S. A reasonably analogous situation in the real (not virtual) realm is taking place at the moment with the well-known Foundation “Renaissance” [“Vidrodzennya”] which was created by the Soros Foundation (the owners of the registered TM) and the foundation “Ukrainske vidrodzhennya” [“Ukrainian Renaissance”] (the violators). The latter is, on official forms, modestly using this same name “Renaissance”, justifying their actions by saying that it is simply a “shortened” version. Incidentally, the legal arguments that these violators are using are word for word identical to those presented by the other violator – UkrMITs.